trade mark inter partes decision 0/022/18 · 2018-01-09 · o/022/18 . trade marks act 1994 . trade...

O/022/18

TRADE MARKS ACT 1994

TRADE MARK APPLICATION No. 3169065

BY FITNESS F LIFE LIMITED

AND

OPPOSITION No. 407774

BY 77 MANAGEMENT LIMITED

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Background and pleadings

1. This is an opposition by 77 Management Limited (“the opponent”) to trade mark

application 3169065 filed on 10th June 2016 (“the relevant date”) by Fitness F Life

Limited (“the applicant”). The applicant wishes to register the trade mark shown

below.

2. The application covers the following goods in class 25.

“Athletic clothing; athletic tights; athletics footwear; athletics hose; athletics

shoes; athletics vests; athletics wear; footwear for men; footwear for

sports; footwear for women; hats; head wear; tee-shirts.

3. The opponent is the management company of Andy Murray the tennis player. It

deals with Mr Murray’s public relations and commercial interests. It opposes the

registration of the trade mark on the basis of Sections 5(2)(b), 5(3) and 5(4)(a) of the

Trade Marks Act 1994 (“the Act”). The s.5(2) and s.5(3) grounds are based on the

opponent’s earlier European Union trade mark (EUTM) 13647573, which is shown

below.

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4. The opponent says that the earlier mark is derived from Andy Murray’s initials and

the numeral 77, being the number of years since a previous British player won the

men’s single title at Wimbledon.

5. The earlier mark is registered for a range of goods/services in classes 9, 16, 18,

25, 28 and 41. The opponent relies on the registration of the earlier mark for all these

goods/services. However, for reasons which will become apparent, it will only be

necessary to consider the goods/services in classes 25 (clothing) and 41 (sporting

services).

6. The opponent claims that the respective trade marks are similar, that the

respective goods in class 25 are identical, and that the services covered by the

earlier mark in class 41 are similar to the goods covered by the contested mark. It

also claims that the earlier mark has acquired a reputation and enhanced level of

distinctiveness in relation to goods/services in classes 25 and 41 as a result of the

use made of it since the beginning of 2015. Consequently, use of the contested mark

would create a likelihood of confusion and/or, without due cause, take unfair

advantage of, or be detrimental to, the reputation or distinctive character of the

earlier mark. Therefore, registration should be refused under s.5(2) or s.5(3) of the

Act.

7. I note that the only head of damage specifically identified for the purposes of the

s.5(3) ground is that the public will believe that the opponent is the user of the

contested mark or that the user of the contested mark is economically connected

with the user of the opponent’s mark.

8. Additionally, the opponent claims that it has acquired goodwill in the UK as a

result of the use of the earlier mark since March 2015 in relation to:

“Articles of clothing; sporting entertainment services; sporting services; sport

coaching services; production of video and/or sound recordings; publication of

information relating to sports events on the internet; promotion of goods and

services through sponsorship; sports personality promotion; sport

management services; public relations.”

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9. The opponent claims that use of the contested mark would constitute a

misrepresentation to the public which would damage the opponent’s goodwill.

Consequently, use of the contested mark would be contrary to the law of passing off.

Therefore, registration should be refused under s.5(4)(a) of the Act.

10. The applicant filed a counterstatement denying the grounds of opposition and

putting the opponent to proof of the reputation, goodwill and enhanced

distinctiveness claimed for the earlier mark. I note that the applicant also asked the

opponent to provide proof of use of the earlier mark in class 25 (clothing). However,

the earlier EU trade mark was only filed in January 2015 and was not registered until

May 2015. Therefore, it has not been registered for the 5 year period specified in

s.6A of the Act before proof of use is required. This means that the opponent can

rely on the earlier trade mark in class 25 in this opposition without having to show

any use of it in relation to clothing. However, to the extent that the opponent claims

that the earlier mark has become more distinctive as a result of extensive use, it will

have to prove that.

Representation

11. The applicant is represented by Forde Campbell LLC, solicitors. The opponent is

represented by HGF Limited, chartered trade mark attorneys. Neither side asked for

a hearing. This decision is therefore taken after careful consideration of the evidence

and written submissions filed on behalf of the parties.

The evidence

12. The opponent’s evidence consists of witness statements by Matthew Gentry, the

opponent’s Managing Director, and Katie Goulding, who is a chartered trade mark

attorney with HGF Limited.

13. Mr Gentry’s evidence is that the opponent changed its name to 77 Management

Limited in 2013 as an acknowledgment of Andy Murray’s achievement in being the

first British man to win Wimbledon in 77 years. The opponent deals with Mr Murray’s

commercial interests such as sponsorship, charitable partnerships, marketing and

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PR, e-commerce and brand licensing, as well as managing his tennis commitments.

It owns Andy Murray’s intellectual property. Between 2013 when the name changed

and Mr Gentry’s statement in April 2017, the opponent made over £12m in profits.

There is no further information as to which of the company’s specific activities

generated these profits.

14. Mr Gentry says that the “significance of ‘77’ has been well documented in the

press and the launch of the logo received a lot of media attention.” He provides nine

examples.1 Five are from online versions of newspapers from January 2015,

specifically The Guardian, The Telegraph, The Mirror, Daily Mail and The Scotsman.

The copies in evidence are difficult to read, but they appear to bear out Mr Gentry’s

claim that (a) the adoption of the logo corresponding to the earlier mark received

press coverage in the UK, and (b) it was reported as being based on Andy Murray’s

initials and the number 77.

15. The earlier mark has appeared on the banner on Andy Murray’s website since

January 2015 where it is called the AM77 logo.2 The website hadbeen seen by 1.8m

visitors by January 2017, about half of which visited the site before the relevant

date.3

16. Mr Gentry says that “the logo first appeared on shirts in January 2015 and has

been continually used since that date.” He continues “it appears on all of Andy

Murray’s match shirts and the majority of his training shirts, his court bag and on the

tongue of his tennis shoes.” TV viewing figures for Wimbledon 2015 (as a whole)

were around 30m. UK viewing figures for all the tournaments in 2015 and 2016 in

which Andy Murray took part were nearly 150m.

17. According to Mr Gentry, Andy Murray partnered with Standard Life in July 2016

to create a series of 4 short films entitled Master your Dreams. The earlier mark was

shown on Mr Murray’s t-shirt in each film. The films were shown on a website called

www.withandy.com and on YouTube. July 2016 is after the relevant date. These

1 See exhibit MPG2 2 See MPG3 3 See MPG4

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films do not therefore seem relevant to the public’s perception of the earlier mark at

the relevant date. However, Mr Gentry also provides the dates at which each of the

films was created. Two of these are before the relevant date (18th January 2016 and

20th May 2016). He also provides viewing figures for these films (18k and 400k,

respectively). It is not clear how these films could have been created at the stated

dates as a result of a partnership entered into later in 2016. At least one of the dates

must be wrong. Mr Gentry provides copies of what he says are screen shots from

the films.4 However, these are headed ‘kit photography’ and are dated between 2015

and 2017. They cannot therefore all be screen shots from films created in 2016. This

part of Mr Gentry’s evidence therefore appears manifestly unreliable. In any event,

he does not say how many people viewed the first two films by the relevant date, or

how many of them were from the UK. So even if this evidence was internally

consistent, it could not have been given substantial weight.

18. Ms Goulding’s statement merely introduces the results of some Google searches

she conducted. The first uncovered an article published on the UK website

creativereview.co.uk in January 2015 about the earlier mark having been designed

for Andy Murray by a branding agency. The writer said:

“Of course, this is nothing new – Nike launched the iconic jumpman logo for

Michael Jordan branded sneakers over 25 years ago, and almost every major

athlete now has their own official fan site or product range – but while this was

previously reserved for stars with iconic status, it’s now simply commonplace”.

The article explains the significance of the number ‘77’ and records that the logo is

Mr Murray’s personal brand. The writer states that it was intended to be applied to a

range of clothing and merchandise and concludes:

“The angular design will likely prove divisive, and I am not sure everyone will

recognise the ‘77’ reference, but it’s a distinctive marque with a strong athletic

look.”

4 See MPG5

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19. A similar article appeared on the website scoreandchange.com in February

2015. The writer said:

“one of the best ways to use a personal logo for branding purposes is through

the sale of merchandise… It will take some time before [Andy Murray’s]

merchandise hits the market and is actively advertised.”

This article also explained that the mark incorporates Andy Murray’s initials and the

number 77.5

20. The applicant’s evidence consists of a witness statement by Dennis Otim, who is

a director of the applicant. Mr Otim says that the contested mark “has since, its

inception, been available to the public via a range of sporting and urban apparel” on

the applicant’s website. However, he does not say when this was, so there is no

evidence that the contested mark was in use at the relevant date.

The section 5(2)(b) ground of opposition

21. Sections 5(2)(b) of the Act is as follows:

“5(2) A trade mark shall not be registered if because-

(b) it is similar to an earlier trade mark and is to be registered for goods or

services identical with or similar to those for which the earlier trade mark is

protected, there exists a likelihood of confusion on the part of the public,

which includes the likelihood of association with the earlier trade mark”.

Comparison of goods and services

22. The opponent’s earlier EU trade mark is registered for, inter alia:

5 See exhibits KLG1 and 2

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Class 25: Articles of clothing; footwear; headgear; shirts, articles of sports

clothing, sports footwear and sports headgear.

23. In Gérard Meric v OHIM6 the General Court stated that:

“29. ….the goods can be considered as identical when the goods designated

by the earlier mark are included in a more general category, designated by

trade mark application (Case T-388/00 Institut fur Lernsysteme v OHIM-

Educational Services (ELS) [2002] ECR II-4301, paragraph 53) or where the

goods designated by the trade mark application are included in a more

general category designated by the earlier mark”.

24. Taking this guidance into account, I find that the respective goods in class 25 are

identical.

25. The opponent’s earlier mark is registered in class 41 for the following services:

“Educational services; training services; organisation and conducting of

sporting competitions and sporting events; sporting entertainment services;

sporting services; organisation of sporting, recreational and cultural activities;

education academy services; sports academy services; sport coaching

services; sport tuition services; television and radio entertainment services;

sound recording and video entertainment services; entertainment services by

concert, musical and video performances; entertainment services provided

over the internet or from a website; digital music [not downloadable] provided

from the Internet; ring tones [not downloadable] provided from the Internet;

production of video and/or sound recordings; presentation, production and

performance of shows, musical shows, concerts, videos, multimedia videos

and radio and television programmes; recording, film, video and television

studio services; audio, film, video and television recording services; music

publishing; sound recording, film and video production and distribution

services; arranging and conducting of seminars, conferences and exhibitions;

6 Case T- 133/05

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publication of books, magazines and other texts; publication of information

relating to sports events on the Internet.”

26. The opponent submits that there is a link between sporting services in class 41

and clothing in class 25, including clothing for use in sports. According to the

opponent:

“They concern the same field (sports) and target the same public (people

interested in sports, spectators and participants in sports). Attendees at sports

events often wear sport branded attire and particularly because of the

closeness of these goods and services by sponsorships. See for example the

presence of the trade mark of pension company, Standard Life, in the exhibits

to Mr Gentry’s witness statement.”

27. In support of this submission the opponent draws attention to the extracts from

the online articles in Ms Goulding’s evidence set out above.

28. In Canon7 the Court of Justice of the European Union (CJEU) stated at

paragraph 23 of its judgment that:

“In assessing the similarity of the goods or services concerned, as the French

and United Kingdom Governments and the Commission have pointed out, all

the relevant factors relating to those goods or services themselves should be

taken into account. Those factors include, inter alia, their nature, their

intended purpose and their method of use and whether they are in

competition with each other or are complementary”.

29. Sporting services are manifestly different in nature to clothing. The purpose of

the services and goods is also different. Sporting services (in a commercial context)

are a form of entertainment service intended to entertain the public, as well as to

promote the sport in question. The main purpose of clothing, including athletics

clothing, is to provide suitable attire for people playing particular sports. The method

7 Case C-39/97

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of use of such goods is manifestly different to the way that sports services are used.

The respective goods/services are not in competition.

30. I acknowledge that in Kurt Hesse v OHIM8 the CJEU stated that complementarity

is an autonomous criteria capable of being the sole basis for the existence of

similarity between goods. In Boston Scientific Ltd v OHIM9 the General Court had

earlier stated that “complementary” meant:

“...there is a close connection between them, in the sense that one is

indispensable or important for the use of the other in such a way that

customers may think that the responsibility for those goods lies with the same

undertaking”.

31. In Sanco SA v OHIM10 the General Court found that goods and services may be

regarded as ‘complementary’ and therefore similar to a degree in circumstances

where the nature and purpose of the respective goods and services was very

different, i.e. chicken against transport services for chickens. The purpose of

examining whether there is a complementary relationship between goods/services is

to assess whether the relevant public are liable to believe that responsibility for the

goods/services lies with the same undertaking or with economically connected

undertakings. As Mr Daniel Alexander Q.C. noted as the Appointed Person in

Sandra Amelia Mary Elliot v LRC Holdings Limited:11

“It may well be the case that wine glasses are almost always used with wine –

and are, on any normal view, complementary in that sense - but it does not

follow that wine and glassware are similar goods for trade mark purposes.”

Whilst on the other hand:

“.......it is neither necessary nor sufficient for a finding of similarity that the

goods in question must be used together or that they are sold together.” 8 Case C-50/15 P 9 Case T-325/06 10 Case T-249/11 11 BL-0-255-13

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32. The opponent’s evidence that sports stars often have personal logos that are

used to identify their merchandise (or merchandise they endorse) appears to be

intended to show that the public might believe that the responsibility for the

applicant’s clothing might lie with the same undertaking that provides sports services

under the earlier mark, or with an economically connected undertaking. However, the

difficulty with this submission is that it is not based on the inherent characteristics of

clothing and sports services, or the usual marketing conditions for such

goods/services. Instead it depends on the goods marketed under the earlier mark

being those of a sports star, which is not a clear or precise sub-category of clothing.

33. The opponent’s approach would mean that the same goods and/or services

might be regarded as being similar or dissimilar, depending on the reputation of the

earlier mark. Taken to its logical conclusion it would also mean that any potential

merchandise could be regarded as similar to sports services, notwithstanding the

absence of any objective similarity between the goods and services. Adopting such

an ‘elastic’ approach to similarity of goods/services would undermine the

requirement in s.5(2) of the Act for the respective goods/services to be objectively

similar, at least to some extent. It would also make it unduly difficult for other

operators in the market sectors concerned to assess whether a particular mark is

free for use in relation to particular goods/services. I therefore reject the approach

proposed by the opponent.

34. There is no evidence that any clothing has been marketed under the earlier trade

mark. Nor is there is there any evidence that the public would normally expect

clothing, including sports clothing, to be marketed by, or with the consent of,

undertakings that provide sports services. I therefore find that clothing is not

complementary to sports services in the sense required by the case law.

35. It is true that users of sports clothing may also be users of sports services.

However, this is not sufficient, by itself, to justify a conclusion that the respective

goods/services are similar. I therefore reject the opponent’s submission that the

respective goods/services in classes 25 and 41 are similar in any material way.

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36. In doing so, I note that the courts have rejected similar attempts to broaden the

protection afforded to marks under provisions of law equivalent to s.5(2) of the Act

when it comes to marks claiming to have a particular kind of reputation with the

public. For example, in Compagnie des montres Longines, Francillon SA v OHIM,12,

the General Court rejected the argument that sunglasses, jewellery and watches

were similar to clothing on the basis that they were all types of luxury goods and the

earlier mark had a reputation as a luxury brand. The court held that:

“54. In that regard, in particular, it must also be stated that the applicant has

not proved its claim that, in the luxury and fashion sector, it is generally the

trade mark and its prestige among consumers that motivate the consumer’s

decision to purchase a specific item and not the actual necessity to purchase

that item, inter alia for its functionalities and to fulfil a very specific need.

Likewise, it is necessary to reject as not proved the applicant’s claim that, as

the appearance and value of the goods prevail over other factors relating to

their nature, consumers in the sector concerned are principally in search not

of specific goods, but of satisfaction for their ‘hedonistic needs’ or that they

seek the instant gratification generated by an impulse purchase.

55. Moreover, it must be stated that to accept that such claims are well-

founded would be tantamount, in essence, to rendering irrelevant any

differentiation between goods which belong to the luxury sector and are

protected by the respective marks, since the applicant’s theory relating to the

impulse purchase aimed at the instant gratification of consumers leads to the

conclusion that a likelihood of confusion may actually exist irrespective of the

goods concerned, on the sole condition that they all fall within that sector.

Such an approach, by which the applicant in actual fact alleges that all the

goods at issue are interchangeable, is manifestly contrary to the principle of

speciality of marks which the Court must take into account in its analysis in

accordance with Article 8(1)(b) of Regulation No 207/2009 and would

improperly extend the area of protection of trade marks. For the same

reasons, it is necessary to reject as irrelevant the applicant’s claim that the

12 Case T-505/12

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goods are interchangeable inasmuch as each of them may be given as a gift

and the consumer impulsively chooses one or other of them. To accept such

a vague connection would lead to holding that goods which are manifestly

different in their nature and intended purpose are similar.”

37. It follows from the above findings that the opposition under s.5(2)(b) of the Act

based on the registration of the earlier mark in class 41 fails. This is because the

requirement for similarity between the respective goods/services is a mandatory

requirement of this provision.13

Global comparison

38. Having decided that the earlier mark is registered in relation to identical goods in

class 25, it is necessary to carry out a global comparison of the likelihood of

confusion.

Relevant principles

The following principles are gleaned from the decisions of the EU courts in Sabel BV

v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc,

Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case C-

342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98,

Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson

Multimedia Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato &

C. Sas v OHIM, Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P.

The principles

(a) The likelihood of confusion must be appreciated globally, taking account of

all relevant factors;

13 See Waterford Wedgwood plc v OHIM – C-398/07 P (CJEU)

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(b) the matter must be judged through the eyes of the average consumer of

the goods or services in question, who is deemed to be reasonably well

informed and reasonably circumspect and observant, but who rarely has the

chance to make direct comparisons between marks and must instead rely

upon the imperfect picture of them he has kept in his mind, and whose

attention varies according to the category of goods or services in question;

(c) the average consumer normally perceives a mark as a whole and does not

proceed to analyse its various details;

(d) the visual, aural and conceptual similarities of the marks must normally be

assessed by reference to the overall impressions created by the marks

bearing in mind their distinctive and dominant components, but it is only when

all other components of a complex mark are negligible that it is permissible to

make the comparison solely on the basis of the dominant elements;

(e) nevertheless, the overall impression conveyed to the public by a

composite trade mark may be dominated by one or more of its components;

(f) however, it is also possible that in a particular case an element

corresponding to an earlier trade mark may retain an independent distinctive

role in a composite mark, without necessarily constituting a dominant element

of that mark;

(g) a lesser degree of similarity between the goods or services may be offset

by a great degree of similarity between the marks, and vice versa;

(h) there is a greater likelihood of confusion where the earlier mark has a

highly distinctive character, either per se or because of the use that has been

made of it;

(i) mere association, in the strict sense that the later mark brings the earlier

mark to mind, is not sufficient;

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(j) the reputation of a mark does not give grounds for presuming a likelihood

of confusion simply because of a likelihood of association in the strict sense;

(k) if the association between the marks creates a risk that the public might

believe that the respective goods or services come from the same or

economically-linked undertakings, there is a likelihood of confusion.

Average consumer and the selection process

39. The average consumer is deemed to be reasonably well informed and

reasonably observant and circumspect. For the purpose of assessing the likelihood

of confusion, it must be borne in mind that the average consumer's level of attention

is likely to vary according to the category of goods or services in question: Lloyd

Schuhfabrik Meyer.

40. The average consumer of the goods covered by the contested mark is a member

of the general public, including the public interested in sports/athletics. There is

nothing about the goods covered by the contested mark which leads me to believe

that they will be selected with a lower or higher degree of attention than usual. I

therefore find that the average consumer will pay a normal degree of attention when

selecting such goods.

41. The opponent submits that clothing is primarily a visual purchase and therefore

the visual similarities between the marks are most important. In support of this

submission my attention was drawn to the judgment of the General Court in New

Look Ltd v OHIM14 where the court stated that:

“50. …….Generally, in clothes shops customers can themselves either

choose the clothes they wish to buy or be assisted by the sales staff. Whilst

oral communication in respect of the product and the trade mark is not

excluded, the choice of the item of clothing is generally made visually.

Therefore, the visual perception of the marks in question will generally take

14 Joined cases T-117/03 to T119/03 and T-171/03

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place prior to purchase. Accordingly, the visual aspect plays a greater role in

the global assessment of the likelihood of confusion.”

42. I accept the opponent’s submission on this point.

Distinctive character of earlier mark

43. In Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV,15 the CJEU

stated that:

“22. In determining the distinctive character of a mark and, accordingly, in

assessing whether it is highly distinctive, the national court must make an

overall assessment of the greater or lesser capacity of the mark to identify the

goods or services for which it has been registered as coming from a particular

undertaking, and thus to distinguish those goods or services from those of

other undertakings (see, to that effect, judgment of 4 May 1999 in Joined

Cases C-108/97 and C-109/97 WindsurfingChiemsee v Huber and

Attenberger [1999] ECR I-0000, paragraph 49).

23. In making that assessment, account should be taken, in particular, of the

inherent characteristics of the mark, including the fact that it does or does not

contain an element descriptive of the goods or services for which it has been

registered; the market share held by the mark; how intensive, geographically

widespread and long-standing use of the mark has been; the amount invested

by the undertaking in promoting the mark; the proportion of the relevant

section of the public which, because of the mark, identifies the goods or

services as originating from a particular undertaking; and statements from

chambers of commerce and industry or other trade and professional

associations (see Windsurfing Chiemsee, paragraph 51).”

15 Case C-342/97

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44. The opponent submits that the earlier mark has acquired an enhanced distinctive

character “whether per se or in connection to sports merchandise including attire

and/or sporting services.” In this connection it relies on Mr Gentry’s evidence that:

• The earlier mark has been visible on Andy Murray’s t-shirts since January

2015;

• The t-shirts worn by Mr Murray have received wide exposure through the

broadcasting of tennis events;

• The earlier mark has featured on Andy Murray’s website since January 2015;

• The launch of the logo received high press attention;

• The publication on the internet of the 4 films created in partnership with

Standard Life in which the earlier mark could be seen.

45. The applicant submits that as the earlier mark has not been used in relation to

the marketing of clothing, it cannot have acquired an enhanced level of

distinctiveness for such goods.

46. As to the inherent characteristics of the earlier mark, there is no suggestion that

the mark is descriptive or even allusive of any characteristic of clothing. On the other

hand, I do not consider that average consumers of clothing would find it particularly

striking and therefore highly memorable. On the contrary, the mark appears to be a

relatively straightforward geometrical design. I note that the author of the article on

the website creativereview.co.uk thought that the logo was “a distinctive mark with a

strong athletic look”. However, there is no reason to believe that the reaction of the

author is likely to be typical of that of an average consumer of clothing. In any event,

it does not appear to be at odds with my own overall assessment that the earlier

mark has a normal degree of inherent distinctiveness in relation to clothing.

47. Turning to the arguments about enhanced distinctiveness through use, I consider

that there is force in the applicant’s submission that in the absence of any use of the

mark in relation to the marketing of clothing to the public, the mark cannot have

acquired an enhanced level of distinctive character as a trade mark for clothing.16

16 See Neuberger J. (as he then was) in Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767

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48. However, even if I am wrong about that, I do not consider that the evidence is

sufficient to establish that the use of the earlier mark as Andy Murray’s personal

logo had materially enhanced the distinctiveness of the earlier mark by the relevant

date. I have already explained why I cannot place much weight on the showing of the

earlier mark in the 4 films created in partnership with Standard Life.

49. I acknowledge that millions of UK tennis watchers will have seen Mr Murray

appearing in tennis tournaments during 2015 and the first half of 2016. However, it is

not clear to me how many of them would have noticed the logo on the sleeve of his t-

shirt (and his sports bag). Further, it is even less clear how many of the public who

did notice it would have understood that it was his personal logo (as opposed to

(say) that of a sponsor). Further, even those who noticed it and recognised it as his

personal logo may reasonably have thought that it was being used on his t-shirt (and

bag) but in relation to himself. In other words the appearance of the mark on his t-

shirt may not have created any particular association between the mark and clothing

as goods. The same applies to the use of the mark on Mr Murray’s website and in

newspaper reports in January 2015.

50. Admittedly, those who read the articles that appeared on the websites

creativereview.co.uk and scoreandchange.com in January and February 2015 may

have made a connection between the earlier mark and clothing, as well as with Mr

Murray himself. However, there is no evidence that these sites are followed by large

numbers of the general public, as I might be able to infer when it comes to

publications such as The Telegraph etc.

51. I therefore find that the earlier mark had not acquired an enhanced level of

distinctiveness by the relevant date in relation to clothing.

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Comparison of marks 52. The marks are shown below.

Earlier trade mark Contested trade mark

53. The CJEU stated at paragraph 34 of its judgment in Bimbo SA v OHIM that:

“.....it is necessary to ascertain, in each individual case, the overall impression

made on the target public by the sign for which registration is sought, by

means of, inter alia, an analysis of the components of a sign and of their

relative weight in the perception of the target public, and then, in the light of

that overall impression and all factors relevant to the circumstances of the

case, to assess the likelihood of confusion.”

54. The opponent submits that:

(i) Both marks consist of three bold vertical lines with two bold horizontal lines

positioned across the top and crossing the middle of the vertical lines;

(ii) The crossed lines create two ‘windows’ at the top of each mark;

(iii) In both cases the vertical lines lean to the right;

(iv) There is a plus sign in the middle of each mark;

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(v) The differences between the marks are limited to (a) the lines in the earlier

mark are not all full lines, some have a 45 degree angle, and (b) the

presence of the words “Fitness for Life” in the contested mark.

55. As to the last point, the opponent submits that the words “Fitness for Life” are

barely legible in the contested mark and the dominant and distinctive element of that

mark is therefore the device element.

56. According to the opponent, both marks are open to interpretation and it cannot

be assumed that the section of the public who are unfamiliar with the story behind

the creation of the mark will recognise the earlier mark as being derived from the

letters AM and/or the numeral 77. The opponent says that, if letters or numerals are

perceived at all, which they may not be, then there are many possible interpretations,

including AAL, AA, AFL, FA, FAL, ML, M, ITL, AM, AML, and ITL. The opponent

submits that this also applies to the device element of the contested mark.

57. The opponent further submits that as the earlier mark has no verbal element, no

verbal (or aural) comparison is possible. However, the visual similarity between the

marks is “striking”.

58. The applicant submits that the earlier mark consists of “illusionary ‘3-dimensional’

intersecting elements, combining a ‘3-dimensional’ letter ‘T’ on its side which

intersects with a ‘3-dimensional’ number 77.” By contrast, the contested mark is said

to consist of the words ‘Fitness For Life’ and a device comprising “a stylised 2-

dimensional representation of the letters 'FFL' in bold in a fused state, so as to

create two white rectangular parallelograms framed by a solid black border

supported by three solid black forward leaning straight lines, the right hand one of

which forms a leaning 'L' shape.” The applicant therefore submits that the opposition

is “completely groundless” and should be dismissed. I take this to mean that there is

no similarity between the marks.

59. In Ravensburger AG v OHIM17 the General Court held that:

17 Case T-243/08

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“27. It is appropriate at the outset to reject that complaint as unfounded. The

reputation of an earlier mark or its particular distinctive character must be

taken into consideration for the purposes of assessing the likelihood of

confusion, and not for the purposes of assessing the similarity of the marks in

question, which is an assessment made prior to that of the likelihood of

confusion (see, to that effect, judgment of 27 November 2007 in Case

T-434/05 Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media

Gateway), not published in the ECR, paragraphs 50 and 51).”

60. Consequently, even if the earlier mark had a relevant reputation at the relevant

date, it is not relevant to the similarity between the marks. Leaving the claimed

reputation of the earlier mark to one side, I find it unlikely that average consumers

will see any letters or numbers in the earlier mark. Further, as average consumers

normally perceive marks as a whole and do not proceed to analyse their various

details, it is also unlikely that such consumers will notice “windows”, “plus signs” or

“rectangular parallelograms” in the earlier mark. Instead it will strike them as an

abstract geometrical device consisting, broadly, of three vertical lines crossed by two

horizontal ones (or possibly by one line across the middle and two half lines across

the top). I agree with the applicant that the device has a certain three dimensional

quality. However, although it is more than negligible, this makes only a small impact.

The use of angles so that the horizontal lines merely ‘touch’ in three places, rather

than fully join, makes more of a contribution to the overall visual impression created

by the earlier mark. The use of angles also means that the bottom of the three

vertical lines in the earlier mark have downward pointed ends, which also contributes

to the overall impression created by that mark.

61. The device is the dominant and distinctive element of the contested mark. It is

also formed of a number of vertical lines crossed in roughly the same places by two

horizontal ones. However, the lines in the contested mark are solid, uniform and

unbroken. Further, the additional horizontal line extending right from the base of the

final vertical line breaks up the impression of three vertical lines and instead makes

the right hand side of the device look rather more like a letter ‘L’. In my view, average

consumers who read the words “Fitness For Life” beneath the device are likely to

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see the device as stylised letters FFL. However, the words in the contested mark are

relatively small. I therefore accept the opponent’s submission that not all average

consumers will read them.18 For those average consumers who do not (or cannot)

read the words, the contested mark is likely to convey the impression of an abstract

geometrical device with the characteristics mentioned above.

62. Taking all relevant factors into account (including that both marks ‘lean’ to the

right to different degrees), I find that for those average consumers who see the

device in the contested mark as stylised letters FFL, there is very little visual

similarity with the earlier mark (which plainly does not represent the letters FFL). For

those average consumers who do not (or cannot) read the words in the contested

mark, and who therefore are more likely to see it as an abstract geometrical device, I

find that although the devices at issue have certain high level similarities, the overall

impressions they create are quite noticeably different. In my view, the degree of

visual similarity between them is therefore moderate (at most).

63. Those average consumers who read the word “Fitness For Life” in the contested

mark are likely to verbalise it accordingly. I agree with the opponent that the earlier

mark has no verbal element. Therefore, the above words will aurally distinguish the

contested mark from the earlier mark.

64. I also agree with the opponent that no aural comparison is possible for those

consumers who see no verbal element in either mark.

65. Neither device has any concept which is discernible just from its inherent

qualities. For those consumers who read the words “Fitness For Life” in the

contested mark, the concept of that mark will be idea of keeping fit for a healthy life.

Consequently, to that section of average consumers, the concept of the contested

mark will help to distinguish it from the earlier mark.

18 There is no single meaning rule: See Soulcycle Inc v Matalan Ltd, [2017] EWHC 496 (Ch), Mann J. at paragraphs 27 and 28 of the judgment.

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Likelihood of confusion

66. I find that for those average consumers who read the word “Fitness For Life” in

the contested mark, and who are therefore likely to see the device element as

stylised letters FFL, there is no likelihood of confusion. This is because the earlier

mark is highly resistant to the interpretation FFL and the degree of overall similarity

between the marks (based on this perception of the contested mark) is very low. In

these circumstances, the identity of the goods is not enough to overcome the

differences between the marks.

67. I find that for those average consumers who do not (or cannot) read the words in

the contested mark, and who may therefore see it as an abstract geometrical device,

the moderate degree of overall visual similarity between the marks is still not

sufficient to create a likelihood of confusion, despite the identity between the goods.

In reaching this view, I have allowed for a degree of imperfect recollection of the

marks. However, I find that the overall impressions created by the marks are

sufficiently different so as to avoid confusion amongst reasonably observant average

consumers.

68. I see no reason for a likelihood of indirect confusion amongst those average

consumers who recognise that the marks are different. For example, there is no

‘family’ resemblance between them that might suggest that they are used by the

same or related undertakings.

69. The opponent’s evidence appears to be intended to show that the earlier mark

has been well publicised as Andy Murray’s personal logo. The publicity in question,

which is mostly around the launch of the logo in January 2015, informed the public

that the logo was intended to represent the number 77 and, possibly, also Mr

Murray’s initials. However, in my view, irrespective of whether consumers recognise

the device in the contested mark as being based on the letters FFL, they will not see

the device element of the contested mark as being based on the letters ‘AM’ and/or

the numeral 77. The joined solid lines of the device combined with the horizontal line

extending from the right hand side of the base of the device render it positively

resistant to the interpretation ‘77’ and/or ‘AM’. Consequently, those consumers who

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have seen the publicity about Mr Murray’s personal logo are no more likely to be

confused than those who have not. Consequently, it would not have made any

difference if I had found that the earlier mark had acquired an enhanced level of

distinctiveness by the relevant date as Andy Murray’s personal logo.

70. For the reasons given above, the opposition under s.5(2)(b) based on the

registration of the earlier mark in class 25 fails. The opponent can be no better off

relying on the registration of the earlier mark for similar goods in class 18 or any

other class. Consequently, the opposition under s.5(2)(b) is rejected.

Opposition under section 5(4)(a)

71. Section 5(4)(a) states:

“A trade mark shall not be registered if, or to the extent that, its use in the

United Kingdom is liable to be prevented –

(a) by virtue of any rule of law (in particular, the law of passing off) protecting

an unregistered trade mark or other sign used in the course of trade, or

(b) [.....]

A person thus entitled to prevent the use of a trade mark is referred to in this

Act as the proprietor of “an earlier right” in relation to the trade mark.”

72. The opponent claims to have acquired goodwill under Mr Murray’s personal logo

in relation to:

“Articles of clothing; sporting entertainment services; sporting services; sport

coaching services; production of video and/or sound recordings; publication of

information relating to sports events on the internet; promotion of goods and

services through sponsorship; sports personality promotion; sport

management services; public relations.”

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73. On the basis of Starbucks (HK) Limited and Another v British Sky Broadcasting

Group plc19, the opponent accepts that custom (not just reputation) is needed to

establish goodwill under the law of passing off. However, the opponent has provided

no evidence of any sales or marketing of clothing under Mr Murray’s logo. This

element of the opponent’s case must therefore fall at the first hurdle.

74. In the alternative, the opponent relies on the goodwill attached to its business for

sporting services. In fact there is very little evidence about this either, although it is

obvious that Mr Murray has acquired a valuable goodwill as a professional tennis

player.

75. In Irvine v Talksport Ltd20 the Court of Appeal approved Laddie J.’s analysis that

the tort of passing off was wide enough to cover false endorsement. Parker L.J.

stated that:

“31. In his first judgment, Laddie J, after setting out the relevant facts, turned

first to a submission made by Mr Hicks that the cause of action in passing off

does not cover a case where the claimant is represented as having ‘endorsed’

a particular product or service unless it can also be shown that the claimant

and the defendant shared a common field of activity or that the ‘endorsement’

will, at least in the short term, result in some financial loss to the claimant.

32. Having conducted what is, if I may respectfully say so, an impressive

analysis of the historical development of the tort of passing off, the judge

rejected Mr Hicks' submission, concluding (in paragraph 38 of his judgment)

that it is not necessary for a claimant who has been falsely represented as

endorsing a particular product or service to establish these additional facts in

order to recover substantial damages in passing off. The judge continued:

‘Of course there is still a need to demonstrate a misrepresentation

because it is that misrepresentation which enables the defendant to

make use or take advantage of the claimant's reputation.’ 19 UKSC 31 20 [2003] F.S.R. 35

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33. In paragraph 46 of his judgment, the judge said this:

‘It follows from the views expressed above that there is nothing which

prevents an action for passing off succeeding in a false endorsement case.

However, in order to succeed, the burden on the claimant includes a need to

prove at least two, interrelated, facts. First, that at the time of the acts

complained of he had a significant reputation or goodwill. Second, that the

actions of the defendant gave rise to a false message which would be

understood by a not insignificant section of his market that his goods have

been endorsed, recommended or are approved of by the claimant...... .’ ”

76. I will assume that Mr Murray had acquired a substantial goodwill as a

professional tennis player providing sporting services at the relevant date, and that

the opponent is entitled to take action to enforce the legal rights associated with his

goodwill. I will also assume that Mr Murray’s personal logo was distinctive of his

goodwill at the relevant date to a significant number of his fans/watchers, who are

potential customers for clothing etc.

77. The difference between clothing etc. in class 25 and sporting services is not such

as to defeat a passing off claim in a false endorsement case. Moreover, although it

will no doubt be easier to make out such a case where the claimant can show that he

or she has already engaged in commercial endorsements of products of the kind in

question (or at least engaged in commercial endorsements of some kind), this is not

an essential requirement. Rather, as the above case law makes clear, what is

required as a minimum is that “the actions of the defendant gave rise to a false

message which would be understood by a not insignificant section of his market that

his goods have been endorsed, recommended or are approved of by the claimant.”

The false message need not be deliberate.

78. In my judgment, the opponent’s case under s.5(4)(a) falls down at this point. This

is because for the reasons I gave in my analysis under s.5(2)(b), the contested mark

is unlikely to be mistaken for Mr Murray’s personal logo. Consequently, use of the

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mark would not constitute a misrepresentation to the public. The s.5(4)(a) ground of

opposition is therefore also rejected.

Opposition under section 5(3)

79. Section 5(3) states:

“(3) A trade mark which-

(a) is identical with or similar to an earlier trade mark, shall not be registered

if, or to the extent that, the earlier trade mark has a reputation in the United

Kingdom (or, in the case of a European Union trade mark or international

trade mark (EC), in the European Union) and the use of the later mark

without due cause would take unfair advantage of, or be detrimental to, the

distinctive character or the repute of the earlier trade mark.”

Reputation

80. The opponent claims that the earlier mark has acquired a reputation in relation to

clothing and sporting services. In paragraphs 47 to 51 above I set out my reasons for

rejecting the opponent’s claim that the earlier mark had acquired an enhanced level

of distinctiveness in relation to clothing. For the same reasons, I find that the mark

had not acquired a reputation for clothing by the relevant date.

81. Turning to the matter of whether the mark had acquired a reputation for sporting

services, I find that there is room for argument as to whether the earlier mark has

been used in relation to sporting services provided by, or with the consent of, Mr

Murray (as opposed to just used in relation to Mr Murray himself). However, for

present purposes I will assume that it has been used in relation to such services.

82. I note that the requirements for establishing a qualifying reputation under article

5(2) of the Trade Mark Directive (section 5(3) of the Act) were considered by

Advocate General Jacobs in General Motors.21 The Advocate General noted that

21 Case C-375/97

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Article 5(2) did not appear in the initial proposal for the Directive put forward by the

Commission which considered that such extensive protection was not justified for

national trade marks, but should be restricted to a limited number of Community

marks, namely marks of wide repute.22 However, in the course of negotiations in the

Council, a provision protecting marks with a reputation was included at the request of

the Benelux countries, and became Article 5(2) of the Directive. The Advocate

General concluded that a trade mark with a reputation within the meaning of Article

5(2) of the Directive should be interpreted as meaning a mark which is known to a

significant part of the relevant sectors of the public, but which need not attain the

same degree of renown as a mark which is well known within the meaning of the

Paris Convention.

83. The CJEU essentially followed the Advocate General’s Opinion in finding that:

“25. It cannot be inferred from either the letter or the spirit of Article 5(2) of the

Directive that the trade mark must be known by a given percentage of the

public so defined.

26. The degree of knowledge required must be considered to be reached

when the earlier mark is known by a significant part of the public concerned

by the products or services covered by that trade mark.

27. In examining whether this condition is fulfilled, the national court must take

into consideration all the relevant facts of the case, in particular the market

share held by the trade mark, the intensity, geographical extent and duration

of its use, and the size of the investment made by the undertaking in

promoting it.

28. Territorially, the condition is fulfilled when, in the terms of Article 5(2) of

the Directive, the trade mark has a reputation 'in the Member State‘. In the

absence of any definition of the Community provision in this respect, a trade

22 See the Commission proposal, OJ 1980 C 351, p. 1 and EC Bulletin, Supplement 5/80.

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mark cannot be required to have a reputation ‘throughout’ the territory of the

Member State. It is sufficient for it to exist in a substantial part of it.”

84. It is clear from this that the ‘reputation’ required in order for a trade mark to

qualify for protection under s.5(3) cannot be equated with the requirement for

goodwill and reputation under the common law of passing off. The latter protects

businesses with even a modest local reputation against damaging

misrepresentations by third parties. The former provides more extensive protection

to registered marks “known by a significant part of the public concerned by the

products or services” “in a substantial part of [the EU]”.

85. Applying the criteria proposed by the CJEU to the facts before me I find that:

• There is no evidence of the share of the sporting services market held by the

mark (if any);

• There is no evidence as the value or volume of sporting services provided

under the mark;

• The mark was used for about 18 months prior to the relevant date and

received substantial exposure through television coverage of Andy Murray

playing at tennis tournaments;

• There is no evidence as to the amount spent promoting the mark (if any).

86. In my view, the evidence fails to establish that the mark had acquired a

reputation for sporting services amongst “a significant part of the [EU] public

concerned by the products or services covered by that trade mark.” If I am wrong

about that, then I find that the mark had acquired only a modest reputation by the

relevant date.

Link

87. Assuming that the earlier mark had a qualifying reputation at the relevant date, it

is necessary to evaluate whether the public when confronted with the later mark

would make a link with the earlier reputed mark, which is the case where the public

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calls the earlier mark to mind.23 Whether such a link exists must be assessed

globally taking account of all relevant factors, including the degree of similarity

between the respective marks and between the goods/services, the extent of the

overlap between the relevant consumers for those goods/services, and the strength

of the earlier mark’s reputation and distinctiveness.24 Where a link is established, the

owner of the earlier mark must also establish the existence of one or more of the

types of injury set out in the section, or there is a serious likelihood that such an

injury will occur in the future.25

88. The factors identified in Intel are:

The degree of similarity between the conflicting marks

Consumers who see the device element of the contested mark as a stylised

representation of the FFL mark will see (at most) only a very low degree of

similarity between the marks. For those that do not, the degree of similarity is

no more than moderate.

The nature of the goods or services for which the conflicting marks are

registered, or proposed to be registered, including the degree of closeness or

dissimilarity between those goods or services, and the relevant section of the

public

Clothing is dissimilar to sporting services and not usually provided by the

same undertakings. However, clothing can be used for promotional or

merchandising purposes and so there is a connection of sorts between the

goods/services.

The strength of the earlier mark’s reputation

I find that it is modest (at most).

23 CJEU, Intel, Case C-252/07, paragraph 63 24 Intel, paragraph 79. 25 Intel, paragraph 68

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The degree of the earlier mark’s distinctive character, whether inherent or

acquired through use

The earlier mark has a normal degree of inherent distinctiveness. Even if it

had acquired a modest reputation by the relevant date, it was not enough to

have made the earlier mark highly distinctive.

89. Taking all the relevant factors into account I find that the public would not have

made a link between the earlier mark and the contested mark. It follows that the

contested mark could not have caused any of the types of injury set out in the

section. In any event, the only type of injury that the opponent specifically pleaded

was that the opponent will be perceived as the user of the contested mark, or that

the user of the contested mark will be perceived as economically connected with the

user of the opponent’s mark. I have already rejected this proposition in my analysis

under s.5(2) and s.5(4)(a). The section 5(3) ground was therefore bound to fail too.

90. The s.5(3) ground is rejected accordingly.

Outcome

91. The opposition has failed. The contested mark will be registered.

Costs

92. The applicant has been successful and is entitled to a contribution towards its

costs. I calculate these as follows:

£350 for considering a notice of opposition and filing a counterstatement

£500 for considering the opponent’s evidence and filing submissions in

response.

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93. I therefore order 77 Management Limited to pay Fitness F Life Limited the sum of

£850. The above sum should be paid within 14 days of the expiry of the appeal

period.

Dated this 9th day of January 2018 Allan James For the Registrar

trade mark inter partes decision 0/022/18 · 2018-01-09 · o/022/18 . trade marks act 1994 . trade...

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